DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “heating the first composition to a first temperature of 110 oC to 130 oC to provide a ligand exchange of the first precursor, the second precursor, and the third precursor with the fatty acid”. The original disclosure does not support this limitation. The original disclosure does provide support for raising the temperature of the first composition to a temperature range of about 110 oC to 130 oC in para [0146]-[0147] but does not mention or provide support for ligand exchange of the precursors with the fatty acid at any temperature. Para [0144] states that by introducing a short fatty acid (2 to 15 carbon atoms) in the first mixture, the steric hindrance of the fatty acid which serves as a ligand may be reduced. However, while reduction of steric hindrance may increase the efficiency of a ligand exchange process, reduction of steric hindrance is not inherently a ligand exchange process. Therefore, the original disclosure does not provide support for ligand exchange of the precursors with the fatty acid. Claims 2-13 are ultimately dependent from claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The instant claims contain the transitional phrase “comprising”. Per MPEP 2111.03 ‘The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps'. This open-ended definition has been taken into consideration in the following rejections.
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over “Gallium – a versatile element for tuning the photoluminescence properties of InP quantum dots” by Wegner et al. (hereinafter Wegner).
Regarding claim 14, Wegner discloses a quantum dot (page 1666, para 1), comprising:
a core of first and second elements that are different Group III elements (In and Ga, page 1666, para 1), in combination with a fourth element that is a Group V (P) element (page 1666, para 1) and
a shell comprising a third element that is a Group II (Zn) element that covers at least a portion of the core (page 1666, para 2).
Wegner further discloses wherein
a number of moles of the first element is n1 ,
a number of moles of the second element is n2,
a number of moles of the fourth element is n4, and
a mole ratio of a sum of the number of moles of the first element and the number of moles of the second element to the number of moles of the fourth element in the core ((n1+n2)/n4) is in a range that overlaps the instantly claimed range of about 1.0 to about 2.0. ((In+Ga)/In) =(~50+50)/~50) (page 1665, para 1). This provides a ratio of about 2 when the In:Ga ratio is 50:50. See MPEP 2144.05(I), which states that ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists’.
Wegner renders the instantly claimed quantum dot obvious, as discussed above. Claims 14-18 are product-by-process claims. It is noted that Wegner does not explicitly teach the claimed process as written, however, MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
MPEP 2113 also states “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)”. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product. The method of making the quantum dot is not expected to significantly alter the final product, absent evidence to the contrary.
The limitations directed to the method for producing the claimed composition are not considered to add patentable weight to the examination of the product claims. It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Regarding claim 15, Wegner discloses the quantum dot of claim 14, wherein the core is represented by the formula InGaP (page 1666, para 3), which is instantly claimed Formula 2:
InxGa1-xPy
wherein in Formula 2,
x is a real number, 0.1 to 0.15 (page 1665, para 2), which falls within the instantly claimed range of greater than 0 and less than 1, and
y is a real number equal to 1, and satisfies 1.0≤1/y< 2.0 (InGaP, page 1663, para 3).
Regarding claim 16, Wegner discloses the quantum dot of claim 14, but fails to expressly disclose wherein a mass extinction coefficient for a wavelength of 450 nm is in a range of about 250 mL-g-1-cm-1 to about 450 mL-g-1-cm-1. However, the quantum dots overlap. See MPEP 2112.01(I), which states that ‘Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established…“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”…Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product’. The quantum dots overlap. Therefore, one of ordinary skill in the art would expect overlapping extinction coefficients under the same conditions, absent evidence to the contrary.
Regarding claim 17, Wegner discloses an optical member comprising the quantum dot of claim 14 (optoelectronic device, page 1666, para 1).
Regarding claim 18, Wegner discloses an electronic apparatus comprising the quantum dot of claim 14 (optoelectronic device, page 1666, para 1).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wegner in view of US 2017/0162756 A1 to Hartlove et al. (hereinafter Hartlove).
Regarding claim 19, Wegner discloses the electronic apparatus of claim 18, further comprising:
a light source (LED); and
a color conversion member comprising the quantum dots (page 1666, para 1) but does not further disclose the apparatus.
However, Hartlove does teach an electronic apparatus comprising a light source; and a color conversion member comprising the quantum dots arranged in a path of light emitted from the light source, wherein the color conversion member comprises the quantum dots (para [0046] and [0192]).
It would be obvious to one of ordinary skill in the art to employ the Hartlove arrangement in the Wegner device to provide a optoelectronic device, such as a display, with improved efficiency and color performance (Hartlove, para [0005]).
Wegner in view of Hartlove renders the instantly claimed apparatus obvious, as discussed above. Claims 19 and 20 are product-by-process claims. It is noted that Wegner in view of Hartlove does not explicitly teach the claimed process as written. However, see MPEP 2113 cited above. In the instant case, it is found that the instantly claimed process of making the claimed product does not impart any structural or functional characteristics to the claimed product, absent evidence to the contrary.
The limitations directed to the method for producing the claimed composition are not considered to add patentable weight to the examination of the product claims. It is well settled that if the examiner can find a product in the prior art that is the same or so similar as to have been obvious, the burden can be shifted to the applicant to demonstrate that the process for producing the composition somehow imparts a patentable distinction to the composition under examination.
Regarding claim 20, Wegner discloses the electronic apparatus of claim 18, but fails to further disclose the apparatus.
However, Hartlove does teach an electronic apparatus, particularly a display (para [0212-[0213] and Fig. 11);
further comprising a light-emitting device (light source, para [0213]) comprising:
a first electrode:
a second electrode facing the first electrode; and
an emission layer (conversion layer, para [0192]) between the first electrode and the second electrode (para [0212]), wherein
the light-emitting device comprises the quantum dot (in conversion layers, para ]0193] and pixels (para [0211]).
It would be obvious to one of ordinary skill in the art to employ the Hartlove arrangement in the Wegner device to provide a display with improved efficiency and color performance (Hartlove, para [0005]).
Response to Arguments
Applicant’s arguments, see page 6, filed 12/22/25, with respect to the 112(b) rejection have been fully considered and are persuasive. The most recent amendment to the claims resolves the issues.
Therefore, the 112(b) rejection of claims 1-20 has been withdrawn.
Applicant's arguments filed 12/22/25, regarding Wegner have been fully considered. Applicant argues that the reference does not teach a fatty acid and particularly does not teach a fatty acid with 2 to 12 carbon atoms. The reference does teach oleic acid. However, oleic acid has 18 carbon atoms. It is agreed that the reference teaches processing the first composition at temperatures outside of the 110 to 130 C range set forth in the newly amended claims.
Therefore, the 103 rejection of method claims 1-13 as obvious over Wegner has been withdrawn.
However, claim 14 is a product by process claim, claiming a quantum dot prepared by the method of claim 1. See MPEP 2113, cited above. Wegner renders product claims 14-18 obvious, as discussed above.
Therefore, the 103 rejection of product claims 14-18 as obvious over Wegner stands.
The 103 rejection of product claims 19 and 20 as obvious over Wegner in view of Hartlove also stands.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/L.E./ Examiner, Art Unit 1734
/Matthew E. Hoban/ Primary Examiner, Art Unit 1734